Ex Parte Kangas

Board of Patent Appeals and Interferences

Aug 26, 2009

10088926 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMO JUHANI KANGAS
____________

Appeal 2009-005739
Application 10/088,926
Technology Center 3600
____________

Decided: August 26, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005739
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STATEMENT OF THE CASE
Timo Juhani Kangas (Appellant) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1-13. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 1

THE INVENTION
The invention is a method and an apparatus, which compensate a
viewer of a piece of information such as an advertisement, in response to an
indication that the user has accessed the piece of information. Specification
2:7-13.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for distributing information or
services through a computer or cellular network,
comprising the steps of:
composing a piece of information or service
to be distributed through the computer or cellular
network;
compiling a list of intended recipients;
transmitting through the computer or
cellular network a preliminary order for crediting
accounts associated with the intended recipients;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 11, 2007) and Reply Brief (“Reply Br.,” filed Sep. 28, 2007),
and the Examiner’s Answer (“Ans.,” mailed Jul. 31, 2007).
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releasing said piece of information or
service so that said piece of information or service
becomes accessible to the recipients appearing on
said list; and
as a response to an indication of a certain
recipient having accessed said piece of information
or service, crediting an account associated with
said certain recipient.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Goldhaber US 5,794,210 Aug. 11, 1998

The following rejections are before us for review:
1. Claims 1-6 and 8-12 are rejected under 35 U.S.C. §102(b) as
being anticipated by Goldhaber.
2. Claims 7 and 13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Goldhaber.

ARGUMENTS
The rejection of claims 1-6 and 8-12 under §102(b) as being anticipated by
Goldhaber.
The Appellant argues that Goldhaber does not describe the steps of
transmitting a preliminary order for crediting accounts associated with
intended recipients and, then, as a response to an indication of a certain
recipient having access the information, crediting the account of the
recipient. App. Br. 6-7 and Reply Br. 4-5. The Appellant argues that these
limitations, recited in claim 1, require an escrow feature and states:
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The requirement of a “preliminary order for
crediting accounts” of intended recipients places
the service providers’ payment (e.g. money into
the hands of an account server (e.g., a third
part)….The service provider’s payment is only
made (“credited”) to the recipient “as a response to
an indication of a certain recipient having accessed
said piece of information or service.”

Reply Br. 3. The Appellant’s assert that Goldhaber does not describe the
escrow feature but instead describes transactions that are complete before
the information is accessible. Reply Br. 5.
The Examiner responds by asserting that Golhaber describes the
claimed invention and cites to Figure 2 and the discussion in column 10,
lines 9-38 for a description of the claimed step of transmitting a preliminary
order for credit accounts. Ans. 7.
We note that the Appellant’s arguments are directed to the steps of the
method of claim 1 and not to the elements of the apparatus of claim 8. The
Appellant does not provide any separate arguments for independent claim 8.

The rejection of claims 7 and 13 under §103(a), as being unpatentable over
Goldhaber.
Claim 7
The Appellant argues that the Examiner has failed to establish a prima
facie showing of obviousness in rejecting claim 7, specifically a showing
that the substeps of defining the time taken for receiving the indication and
crediting the account by an inversely proportional amount are taught in the
prior art or were within the knowledge of one of ordinary skill in the art.
App. Br. 7-10. In rejecting claim 7, the Examiner cites Goldhaber’s
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description of “time sensitive incentives such as coupons” (Ans. 4) and
states that it would be obvious to include the above substeps in Goldhaber
for the reason that “the value of information is often greater when the
information is first posted.” Ans. 4-5. The Examiner also cites Goldhaber’s
description of information concerning a 1994 Explorer. Ans. 5. The
Appellant provides two arguments opposing the Examiner’s rejection.
First, the Appellant traverses the Examiner’s finding that coupons
described in Goldhaber are “time sensitive incentive.” App. Br. 8 and Reply
Br. 6. The Appellant asserts that Goldhaber merely describes coupons.
App. Br. 8. The Appellant argues that Golhaber’s description of coupons
would not lead one of ordinary skill in the art to the substeps of claim 7 and
that the Examiner is using hindsight in the rejection. App. Br. 8 and Reply
Br. 6-7.
Second, the Appellant asserts that the Examiner has not properly
taken Official Notice that “the value of information is often greater when the
information is first posted” since the Examiner has not provided any
evidence to support the Official Notice. App. Br. 8-9 and Reply Br. 6. Also,
the Appellant refutes the Examiner’s assertion that the Appellant has not
adequately challenged the Official Notice and therefore has admitted the
Official Notice as prior art. Reply Br. 6. Finally, the Appellant assert that
the value of some information is not always greater when the information is
first posted, such as old movies and collectables. App. Br. 10.
In response, the Examiner continues to assert that the Appellant did
not seasonably traverse the Examiner’s statement of what is old and well
known. Ans. 8-9. Also, the Examiner asserts that Goldhaber discloses the
user of coupons, which are time sensitive. Ans. 10.
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Claim 13
The Appellant argues that the Examiner has failed to establish a prima
facie showing of obviousness in rejecting claim 13, specifically a showing
that the substeps of ranking the order in which the certain recipient provides
the indication relative to other recipients and crediting the account of the
certain recipient based on order ranking are taught in the prior art or were
within the knowledge of one of ordinary skill in the art. App. Br. 10-13.
In rejecting claim 13, Examiner cites Goldhaber’s description of
information concerning a 1994 Explorer and states that “it is well known to
reward early responders.” Ans. 5. The Examiner concludes that it would
have been obvious to include the above substeps in Goldhaber “for the
obvious reason that the value of information is often greater when the
information is first posted,” which the Examiner asserts the Appellant
admits. Ans. 5.
In response the Appellant refutes the Examiner’s assertion that the
Appellant has admitted that “it is well known to reward early responders.”
App. Br. 10. However, the Appellant also argues that even if it is well
known to reward early responders, one of ordinary skill in the art would still
not have been led to include the above substeps in Goldhaber. App. Br. 10-
11.
The Examiner relies upon the same relied upon the same responses as
for claim 7 above. Ans. 9-10.

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ISSUES
The issues are:
1. Does Goldhaber anticipate claim 1 by describing the steps of
transmitting a preliminary order for crediting accounts
associated with the intended recipient and, as a response to an
indication of a certain recipient having accessed said piece of
information or service, crediting an account associated with
said certain recipient?
2. Would one of ordinary skill in the art have been led by
Goldhaber to the method of claim 7 wherein the step of
crediting an account comprises the substeps of defining the time
taken for said indication to be received and crediting said
account by an amount which is inversely proportional to said
time?
3. Would one of ordinary skill in the art have been led by
Goldhaber to the method of claim 13 wherein the step of
crediting an account comprises the substeps of ranking the
order in which said certain recipient provides the reception
indication relative to other of said intended recipients and
crediting said account associated with said certain recipient
based on the order ranking?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
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Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 recites a method including the steps of 1) transmitting
through the computer or cellular network a preliminary order for
crediting accounts associated with the intended recipients and 2) as
a response to an indication of a certain recipient having accessed
said piece of information or service, crediting an account
associated with said certain recipient.
2. Claim 8 recites an apparatus including 1) means for transmitting to
the means for maintaining accounts a preliminary order for
crediting the accounts associated with certain subscribers and 2)
means for responding to said indication by crediting an account
associated with said certain recipient.
3. The Specification does not provide a definition for “preliminary
order.”
4. The ordinary and customary meaning of “preliminary” is
“something that precedes or is introductory or preparatory.” (See
Merriam-Webster’s Collegiate Dictionary 919 (10th Ed.
1998.)(Entry for “preliminary.”)
5. The ordinary and customary meaning of “order” is “a commission
to purchase, sell, or supply goods or to perform work.” (See
Merriam-Webster’s Collegiate Dictionary 818 (10th Ed.
1998.)(Entry for “order.”)
6. Claim 7 recites a method “wherein the step of crediting an account
comprises the substeps of: defining the time taken for said
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indication to be received; and crediting said account by an amount
which is inversely proportional to said time.”
7. Claim 13 recited a method “wherein the step of crediting an
account comprises the substeps of: ranking the order in which said
certain recipient provides the reception indication relative to other
of said intended recipients; and crediting said account associated
with said certain recipient based on the order ranking.”
The scope and content of the prior art
Goldhaber
8. Goldhaber describes a system for paying user to pay attention to
advertisement or other “negatively priced” information distributed
by a computer network. Abstract.
9. Goldhaber in column 10, lines 46-57 describe an embodiment for
selling “negatively priced” information and states:
A virtual “price tag” 58 associated with
information 56 indicates the amount the
information provider will compensate a consumer
to pay attention to the information 56. In this
example, the consumer uses her computer 104 to
read information 56 (and, in some embodiments, to
interact with the information thereby evidencing
that she has paid attention to it). In response to
paying attention to the information 56, the
information provider compensates the consumer
by providing a payment 60 in the form of a digital
case and/or a credit on the consumer’s account (as
registered by financial clearinghouse 108, for
example).
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10. Goldhaber also describe an embodiment where a consumer pays
for information, such as ads for automobiles (Col. 19, ll. 41-67),
including for a 1994 Explorer (Fig. 14).
11. Goldhaber describes coupons, including coupons limited to
purchases of particular products (Col. 11, ll. 28-31), but not
coupons that are time sensitive. Col. 10, ll. 62-63.
Any differences between the claimed subject matter and the prior art
12. Goldhaber does not describe the steps of 1) defining the time taken
for said indication to be received and 2) crediting said account by
an amount which is inversely proportional to said time.
13. Goldhaber does not describe the steps of 1) ranking the order in
which said certain recipient provides the reception indication
relative to other of said intended recipients and 2)crediting said
account associated with said certain recipient based on the order
ranking.
The level of skill in the art
14. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of computer and
telecommunication networks. We will therefore consider the cited
prior art as representative of the level of ordinary skill in the art.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not
shown’”) (Quoting Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
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Secondary considerations
15. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-6 and 8-12 under §102(b) as being anticipated by
Goldhaber.
The Appellant argued claims 1-6 and 8-12 as a group. App. Br. 7.
We select claim 1 as the representative claim for this group, and the
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remaining claims 2-6 and 8-12 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Claims 1-6
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Board must interpret the claim
language, where necessary. Because the PTO is entitled to give claims their
broadest reasonable interpretation, our review of the Board's claim
construction is limited to determining whether it was reasonable. See In re
Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board must
compare the construed claim to a prior art reference and make factual
findings that “each and every limitation is found either expressly or
inherently in [that] single prior art reference.” Celeritas Techs. Ltd. v.
Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998).” . See also, In
re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
First, we construe the transmitting step of claim 1. Claim 1 recites
“transmitting through the computer or cellular network a preliminary order
for crediting accounts associated with the intended recipients.” FF 1. We
find that the broadest reasonable interpretation, in light of the specification,
of a “preliminary order” is a commission to purchase, sell or supply good or
to perform work that precedes or is introductory or preparatory. FF 3-5. We
also find that claim 1 does not limit what the preliminary order precedes or
is introductory or preparatory to.
Further, the Appellant seems to argue that claim 1 requires that the
transmitting step be performed by the service provider and that the
preliminary order is transmitted to an account server. Reply Br. 3. The
Appellant asserts that this creates an “escrow feature.” Id. However, claim 1
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does not recite that a service provider transmits the preliminary order or that
an account server receives the preliminary order. “Many of appellant’s
arguments fail from the outset because, . . . they are not based on limitations
appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 1 is silent as to who performs the transmitting step and who receives
the transmitted preliminary order. FF 1.
Second, we find that Goldhaber disclosure of a “virtual price tag” (FF
9) reads on the claimed “preliminary order” as we have construed the
limitation above. The virtual price tag is a commission to sell and is used to
credit the account associated with the intended recipient. The virtual price
tag is transmitted to the consumer prior to the consumer accessing the
information and prior to the crediting of the consumers account. FF 9.
Therefore, we find that Goldhaber describes the transmitting step of claim 1.
Second, we turn to the crediting step of claim 1. Claim 1 recites “as a
response to an indication of a certain recipient having accessed said piece of
information or service, crediting an account associated with said certain
recipient.” FF 1. The Appellant seems to argue that claim 1 requires the
preliminary order to be credited to the certain recipient’s account. Reply Br.
3. However, claim 1 does not link the step of crediting an account to the
step of transmitting the preliminary order. FF 1. Again, the Appellant’s
argument is not based on limitations appearing in the claims. Claim 1 is
silent as to whether or not it is preliminary order that is credited in this step.
FF 1.
We find that Goldhaber description of providing a payment in the
form of a credit to the consumer’s account in response to the customer
interacting with the information (FF 9) reads on the claimed crediting step.
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Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 1, and claims 5-6 dependent thereon,
under §102(b) as being anticipated by Goldhaber.
Claims 8-12
Unlike claim 1, claim 8 recites an apparatus which includes “means
for transmitting to the means for maintaining account a preliminary order for
crediting the accounts associated with the certain subscribers” and “means
for responding to said indication by crediting an account associated with said
certain recipient.” FF 2. However, the Appellant’s arguments are drawn to
the step recited in claim 1 and, as discussed above, we found those
arguments unpersuasive. Further, we note that the Appellant does not
provide separate arguments related to the elements of claim 8, and does not
argue that Goldhaber fails to describe the structure or equivalents
corresponding to the means above.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 8, and claims 9-12 dependent thereon,
under §102(b) as being anticipated by Goldhaber.

The rejection of claims 7 and 13 under §103(a) as being unpatentable over
Goldhaber.
Claim 7
Claim 7 recites a method where in the step of crediting an account
comprises defining the time taken for said indication to be received and
crediting said account by an amount which is inversely proportional to said
time. FF 6. The Examiner admits that Goldhaber does not teach these
substeps (Ans. 4) but cites Goldhaber’s disclosure of time-sensitive
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incentives such as coupons (Ans. 4) and of selling information related to a
1994 Explorer. Ans. 5. The Examiner concludes that it would have been
obvious to include these substeps in Goldhaber for “the obvious reason that
the value of information is often greater when the information is first
posted.” App. Br. 5.
The Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, [52 U.S. 248].”
Id. (citing Graham, 383 U.S. at 12 (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 1739. The
operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 415.
First, we find that while Goldhaber does describe coupons, Goldhaber
does not describe that the coupons are “time-sensitive” as asserted by the
Examiner. FF 11.
Next, given Goldhaber’s description of a consumer buying an ad for a
1994 Explorer (FF 11) and actual description of using coupons to credit an
account (FF 10), and even assuming that it is common knowledge that “the
value information is often greater when the information is first posted,” we
find that one of ordinary skill in the art would not have been led to the
substeps of crediting an account by an amount inversely proportional to the
time taken for receiving the indication. The Examiner’s finding of facts are
directed to a broader scope then recited by the substeps of claim 7. Neither
Goldhaber nor the asserted common knowledge teaches crediting an account
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by an amount inversely proportional to the time taken. The claimed
improvement is more than the predictable use of the Examiner’s cited prior
art elements according to their established functions.
The Examiner has not established a prima face showing that one of
ordinary skill in the art would have been led by Goldhaber to the step of
crediting an account which comprises the substeps of defining the time taken
for said indication to be received and crediting said account by an amount
which is inversely proportional to said time. Accordingly, we find that the
Appellant has shown that the Examiner erred in rejecting claim 7 under
§103(a) as being unpatentable over Goldhaber.

Claim 13
Claim 13 recites a method where in the step of crediting an account
comprises ranking the order in which said certain recipient provides the
reception indication relative to other of said intended recipients and crediting
said account associated with said certain recipient based on the order
ranking. FF 7. In rejecting claim 13, the Examiner relies upon an assertion
that “it is well known to reward early responders” and Goldhaber’s
description of a consumer buying an ad for a 1994 Explorer, to conclude that
it would have been obvious to one having ordinary skill in the art to include
the substeps recited in claim 13 in Goldhaber “for the obvious reason that
value of information is often greater when the information is first posted.”
Ans. 5.
For the same reasons as above, we find that given Goldhaber’s
description of a consumer buying an ad for a 1994 Explorer, and even
assuming that it is common knowledge that “to reward early responders,”
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one of ordinary skill in the art would not have been led to the substeps of
crediting an account based on a order ranking of when certain recipients
provided the reception indication relative to other recipients. Again, the
Examiner’s finding of fact directed to a broader scope then recited by the
substeps of claim 7. The claimed improvement is more than the predictable
use of the Examiner’s cited prior art elements according to their established
functions.
The Examiner has not established a prima face case showing that one
of ordinary skill in the art would have been led by Goldhaber to the step of
crediting an account which comprises the substeps of ranking the order in
which said certain recipient provides the reception indication relative to
other of said intended recipients and crediting said account associated with
said certain recipient based on the order ranking. Accordingly, we find that
the Appellant has shown that the Examiner erred in rejecting claim 13 under
§103(a) as being unpatentable over Goldhaber.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-6 and 8-12 under 35 U.S.C. §102(b) as
anticipated by Goldhaber.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 7 and 13 under 35 U.S.C. §103(a) as unpatentable over
Goldhaber.

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DECISION
The decision of the Examiner to reject claims 1-6 and 8-12 is affirmed
and to reject claims 7 and 13 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED -IN-PART

mev

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